DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 8, and 15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the aft component being shorter in length than the face component, does not reasonably provide enablement for the aft component not being parallel to the face component. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. The figures for the instant application all show the face component being in parallel with the face component based on the side profile. Figures such as Figure 12 of the instant application appears to show the aft component offset from the face component. More clarity is needed with respect to the language ‘not parallel’.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1, 8, and 15, it is not clear what the aft component not parallel to the face component entails; therefore, the claims are considered indefinite. For examination purposes, the aft component not parallel to the face component will be interpreted as being not parallel based on the side profile.
Claims 2-7, 9-14, and 16-20 are considered indefinite due to dependency upon an indefinite claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burnett et al. (US 2008/0102978) in view of Larson et al. (WO 2016/190965) and
Williams et al. (US 2007/0117649), and Hoffman et al. (USPN 10188915).
Regarding claim 1, Burnett et al. discloses a club head having a face component 42, a central body 50, and an aft component 48. The central body, based on Figure 6, includes a crown and sole that creates a hollow interior. The central body also has a front opening and a rear opening wherein the face component attached to the front opening and the aft component attaches to the rear opening. The central body is also made of fiber reinforced polymer. Table 4 shows the club head having an inertia about the lyy, equivalent to the applicant's Izz, of 5830 g*cm². Burnett et al. shows an aft component being in line with the face component. Applicant does not disclose why the aft component being non-parallel to the face component is critical in attaining the invention. Figures 8, 16, and 17 of the instant application all show the aft component being parallel to the face component. Absent any showing of any advantage or expected result from the orientation of the aft component, one having ordinary skill in the art would have found the orientation to be an obvious choice of design. One of ordinary skill in the art would have expected the orientation of Burnett et al. to perform in the same manner as that of the applicant. Burnett et al. shows the aft component having a length shorter than the face component but does not disclose the face component having a stiffener, the crown made of a first carbon based material, the sole having a second carbon based material, and the absolute value of an lyz product inertia less than 125 g*cm². Larson et al. discloses a club head having an upper portion and lower portion making the crown and sole respectively. The upper portion is made of a first carbon based material (See Paragraph 0028) and the lower portion is made of a second carbon based material (See Paragraph 0030 and 0031). One having ordinary skill in the art would have found it obvious to have the crown and sole made of a first and second carbon based material respectively, as taught by Larson et al., in order to reduce weight while improving flexibility. Williams et al. discloses a club had having an absolute lyz inertia product of less than 100 g*cm² (See Paragraph 0151). The club head also has a central body made of a carbon-based material. One having ordinary skill in the art would have found it obvious to have an absolute lyz inertia product of less than 100 g*cm², as taught by Williams et al., in order to improve dispersion and distance of a golf ball being struck. Hoffman et al. discloses a club head having a face component with a stiffener 150 reinforcing the striking face (See Figures 3 and 5). One having ordinary skill in the art would have found it obvious to have a stiffener, as taught by Hoffman et al., in order to provide rigidity to the face component.
Regarding claim 2, Burnett et al. discloses the face component made of a metal
material (See Paragraph 0033).
Regarding claim 3, Burnett et al. discloses the face component made of titanium alloy (See Paragraph 0033).
Regarding claim 4, Burnett et al. discloses the aft component made of a metal material (See Paragraph 0033).
Regarding claim 5, Larson et al. discloses the first carbon based material having continuous fibers (long fibers) and the second carbon based material having chopped fibers (short fibers) (See Paragraph 0028) noting that the lower shell is made similar to the upper shell.
Regarding claim 6, Burnett et al. discloses the sole portion having a toe edge wall and a heel edge wall.
Regarding claim 7, Burnett et al. discloses Ixx inertia, equivalent to applicant's lyy, being at least 3400 g*cm² (See Table 5).
Regarding claim 8, Burnett et al. does not disclose an inertia equivalent to the applicant's Ixx inertia. Williams et al. discloses a club head having an Ixx inertia of 2000 to 4000 g*cm² (See Paragraph 0150). One having ordinary skill in the art would have found it obvious to have an Ixx inertia of greater than 2000 g*cm2, as taught by Williams et al., in order to balance the weight of the club head.
Claim(s) 9-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burnett et al. (US 2008/0102978) in view of Larson et al. (WO 2016/190965) and Williams et al. (US 2007/0117649).
Regarding claim 9, Burnett et al. discloses a club head having a face component 42, a central body 50, and an aft component 48. The central body, based on Figure 6, includes a crown and sole that creates a hollow interior. The central body also has a front opening and a rear opening wherein the face component attached to the front opening and the aft component attaches to the rear opening. The central body is also made of fiber reinforced polymer. Table 4 shows the club head having an inertia about the lyy, equivalent to the applicant's Izz, of 5830 g*cm². Burnett et al. shows an aft component being in line with the face component. Applicant does not disclose why the aft component being non-parallel to the face component is critical in attaining the invention. Figures 8, 16, and 17 of the instant application all show the aft component being parallel to the face component. Absent any showing of any advantage or expected result from the orientation of the aft component, one having ordinary skill in the art would have found the orientation to be an obvious choice of design. One of ordinary skill in the art would have expected the orientation of Burnett et al. to perform in the same manner as that of the applicant. Burnett et al. shows the aft component having a length shorter than the face component but does not disclose the face component having the crown made of a first carbon based material, the sole having a second carbon based material, and the absolute value of an lyz product inertia less than 125 g*cm². Larson et al. discloses a club head having an upper portion and lower portion making the crown and sole respectively. The upper portion is made of a first carbon based material (See Paragraph 0028) and the lower portion is made of a second carbon based material (See Paragraph 0030 and 0031). One having ordinary skill in the art would have found it obvious to have the crown and sole made of a first and second carbon based material respectively, as taught by Larson et al., in order to reduce weight while improving flexibility. Williams et al. discloses a club had having an absolute lyz inertia product of less than 100 g*cm² (See Paragraph 0151). The club head also has a central body made of a carbon-based material. One having ordinary skill in the art would have found it obvious to have an absolute lyz inertia product of less than 100 g*cm², as taught by Williams et al., in order to improve dispersion and distance of a golf ball being struck.
Regarding claim 10, Burnett et al. discloses the face component made of a metal material (See Paragraph 0033).
Regarding claim 11, Burnett et al. discloses the face component made of titanium
alloy (See Paragraph 0033).
Regarding claim 12, Burnett et al. discloses the aft component made of a metal
material (See Paragraph 0033).
Regarding claim 13, Burnett et al. discloses Ixx inertia, equivalent to applicant's
lyy, being at least 3400 g*cm2 (See Table 5).
Regarding claim 14, Burnett et al. does not disclose an inertia equivalent to the
applicant's Ixx inertia. Williams et al. discloses a club head having an Ixx inertia of 2000
to 4000 g*cm² (See Paragraph 0150). One having ordinary skill in the art would have found it obvious to have an Ixx inertia of greater than 2000 g*cm2, as taught by Williams et al., in order to balance the weight of the club head.
Regarding claim 15, see the above regarding claim 9. In addition, Applicant does
not disclose why having a crown thickness greater than 0.025 inch and a sole greater
than 0.040 inch is critical in order to attain the invention. Burnett et al. discloses the
crown thickness 0.024 inch and the sole 0.030 inch (See Paragraph 0045) in which is
adequate for strength and durability to the club head. One would believe that these
features are necessary for a club head; therefore, one having ordinary skill in the art
would have found the thickness of the crown and sole to be routine optimization (See In
re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235).
Regarding claim 16, see the above regarding claim 10.
Regarding claim 17, see the above regarding claim 11.
Regarding claim 18, see the above regarding claim 12.
Regarding claim 19, see the above regarding claim 13.
Regarding claim 20, see the above regarding claim 14.
Response to Arguments
Applicant's arguments filed 06/05/26 have been fully considered but they are not persuasive.
Applicant argue that the amendment overcomes the rejection on record. The examiner disagrees. The aft component not being parallel to the face component raises written description issues. In light of the issue, the above rejection has been furnished.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALVIN A HUNTER whose telephone number is (571)272-4411. The examiner can normally be reached on Monday through Friday from 7:30AM to 4:00PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim, can be reached at telephone number 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALVIN A HUNTER/Primary Examiner, Art Unit 3711
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